Will Prior Art Block My Patent Application? Prior Art 101 for §§102 and 103

If you read IP blogs with any regularity you no doubt know that patent reform has come courtesy of the America Invents Act (“AIA”), although the “old” patent law hasn’t really left us and won’t for quite some time.  The most blogged about change brought on by the AIA has undoubtedly been the change from the previous “first-to-invent” system to the current “first inventor to file” system. The AIA accomplished this switch by revising the language of 35 USC §§102 and 103 to redefine what constitutes prior art that can serve as a basis on which to reject an application to patent an invention. Section 102 does the heavy lifting in this regard and the changes to its language are significant. Exactly how significant though is difficult to say in some regards because new statutes come with something of a clean slate in as much as there is no judicial history of interpretation to serve as a lens through which to interpret the language. The “old” §102 has a long history of interpretation by the courts and BPAI and just how clean the slate is on which it was written is itself not clear since there is much similarity between the current and former language. But similarity in form or structure does not necessarily require the same outcome and we lawyers, being what we are, will certainly argue for interpretations beneficial to our clients in the absence of binding precedent from the bench. This post, or more likely a series of posts, will compare the definitions of prior art under the AIA and under the older, first-to-invent regime.

Old §102 was divided into subsection (a)-(g ) while the “new” §102 has subsections (a)-(d) with additional sub-delineations as needed.  New subsection (a)(1) roughly corresponds to old subsections (a) and (b) combined, as seen in the below chart. Note that under old §102, subsection (a) applied only to acts or publications by third parties (i.e., knowledge or use “by others”) and not to the inventor himself or herself. Old subsection (b) applied to everyone, the inventor included, but consequently was somewhat redundant as to third party prior art.  New § 102 (a)(1) simplifies the analysis by eliminating the disparate treatment of acts or publications by the inventor and third parties and is consequently based on the language of old §102(b) which had no distinction.

Picture5A comparison of the language identifies some of the changes.  First, the key date against which potential prior art is considered is now the effective filing date of the application in question as opposed to the date of invention. The date of invention – that is, when the invention was conceived and reduced to practice – is now largely irrelevant.

Second, all geographic limitations to prior art have been eliminated.  Whereas public use or sale outside of the U.S. were previously excluded as prior art, such activity is now considered a prior art disclosure no matter where it takes place.

But, “secret commercialization” – that is, use or sale of an invention that is not known to the public – no longer appear to qualify as prior under the new § 102. Under old §102, sale of an invention or even a product made by an inventive process more than a year prior to the application date was considered disqualifying prior art even if sold or used in secret. The same was true for any “public” use, even if nothing was disclosed to the public in the course of the use.  The USPTO has indicated that it reads the new § 102 to require sales or use to be a public disclosure in order to be disqualifying prior art.  I say this “appears” to be the case because despite the USPTO’s statement to that effect, there is still the possibility that the courts will reach a different conclusion by which the USPTO will be bound.

So, prior art under new §102(a)(1) includes, in a nutshell, any publications by anyone, anywhere before the filing date of the subject application and any public use, sale, offer for sale by anyone anywhere before the filing date of the subject application. But there, as always, are exceptions. Has the one year “grace period” to patentability under old §102(b) been eliminated altogether? Not entirely. But that will have to the subject of my next post.